Appeal No. 1999-0341
Application No. 08/543,351
Claim 28 of Shiokawa states “[a method of combating insects which
comprises applying to … an insect habitat an insecticidally effective amount of a
compound according to claim 1.” In this context we look to the examiner’s citation of
Shiokawa, column 54, lines 18-21, which states “[w]hen used against … pests of
stored products, the active compounds are distinguished by an excellent residual
action on wood ….”
A fair reading of the reference demonstrates that Shiokawa describes
appellants’ claimed invention sufficiently to have placed it in the possession of a
person of ordinary skill in the field of the invention. Specifically, Shiokawa discloses
a method of combating insects (e.g. pests of stored products) which comprises
applying to an insect habitat (e.g. stored products) an insecticidally effective amount
of a compound according to claim 1 (which according to claim 21, clearly includes
1-(6-chloro-3-pyridylmethyl)-2-nitroimino-imidazolidine). Thus, contrary to
appellants’ position each and every element of the claim is taught by Shiokawa.
Accordingly, we affirm the examiner’s rejection of claims 14 and 15 under 35
U.S.C. §102 as anticipated by Shiokawa.
A disclosure that anticipates under 35 U.S.C. §102 also renders the claim
invalid under 35 U.S.C. §103, for anticipation is the epitome of obviousness.
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed.
Cir. 1983), citing, In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA 1982).
Evidence of secondary considerations, such as unexpected results or
commercial success, is irrelevant to 35 U.S.C. § 102 rejections and thus cannot
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